A BILL TO PREVENT ABANDONMENT OF GOVERN- 
MENT APPLICATIONS FOR PATENT 



HEARING 

BEFORE THE 

COMMITTEE ON PATENTS 

HOUSE OF REPRESENTATIVES 

SIXTY-FOURTH CONGRESS 

First Session 

A BILL TO PREVENT ABANDONMENT OF GOVERN- 
MENT APPLICATIONS FOR PATENT 



MARCH 29, 1916 



COMMITTEE ON PATENTS. 
House of Representatives. 

MARTIN A. MORRISON, Indiana, Chairman. 
JOSHUA W. ALEXANDER, Missouri. JOHN I. NOLAN, California. 

WOODSON R. OGLESBY, New York. WILLIAM H. CARTER, Massachusetts. 

CHARLES B. SMITH, New York. HENRY W. WATSON, Pennsylvania. 

ROBERT CROSSER, Ohio. JAMES P. GLYNN, Connecticut. 

JAMES V. McCLINTIC, Oklahoma. WILLIAM B. CHARLES, New York. 

HENRY B. STEAGALL, Alabama. C. WILLIAM BEALES, Pennsylvania. 

W. W. VENABLE, Mississippi. 

Robert H. Morrison, Clerk. 
E. I. Hunt, Assistant Clerk. 



WASHINGTON 

GOVERNMENT PRINTING OFFICE 

1910 






D. of D. 
APR 21 1916 



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ABANDONMENT OF GOVERNMENT APPLICATIONS FOR PATENTS. 



Committee on Patents, 
House of Representatives^ 

House Office Building, 

Washington, D. C, Wednesday, March 29, 1916. 

The committee met at 10.30 o'clock a. m. 

Present: Representatives Oglesby (presiding), Smith, Grosser, 
Nolan, Carter, Glynn, and Charles. 

The committee then proceeded to the consideration of H. R. 13720, 
a bill to amend section 4894 of the Revised Statutes relating to patent 
applications. 

Mr. Oglesby. There are one or two matters I wish to take up 
with the committee, and I am glad we have such an array of legal 
talent here this morning, because they may be of assistance. 

I had a letter from Mr. Sherley this morning inclosing a copy of 
the bill which he had introduced, and the Commissioner of Patents 
has also just called the matter to my attention. Mr. Sherley 's letter 
is addressed to the chairman of the committee, and is as follows: 

Committee on Appropriations, House of Representatives, 

Washington, D. C, March 28, 1916. 
Hon. Martin A. Morrison, 

Chairman House Committee on Patents, House of Representatives . 

My Dear Mr. Morrison: On the 24th I introduced .H R. 13720, a bill to arend 
section 4894 of the Re\ised Statutes relating to patent applications. The amendment 
consists in the proviso, which is as follows: 

"That no application shall be regarded as abandoned which has become the prop- 
erty of the Government of the United States and with respect to which the head 
of any department of the Government shall have certified to the Commissioner of 
Patents, within a period of three years, that the invention disclosed therein is im- 
portant to the armament or defense of the United States." 

The Committee on Fortifications has been considering the advisability of acquiring 
the patent rights and applications for patent of John H. Hammond, jr., and the Radio 
Engineering Co., of New York, and in this connection it developed that there is no 
method for keeping secret patents issued by the Government of the United States, 
and it may be highly desirable in the event that such patents and the applications 
are acquired for the Government to keep secret some of the inventions, and in talking 
the matter over with the Commissioner of Patents the amendment embodied in my 
bill was suggested. The result of its enactment into law will not keep secret patents 
issued by the Government, but will permit the Government to hold in patentable 
status applications for such patents that it might desire to keep secret and with full 
protection from the consideration of conflicting applications by others. 

The amendment is carefully drawn to limit its benefits to the United States, and only 
to the United States in matters relating to national defense. It is extremely desirable 
that action be had upon this bill, and I \\-ill greatly appreciate it if you \^dll take 
occasion to consider it speedily and report it, in which event I will get its terms 
embodied in the Fortifications bill that 1 expect to report in a few days. 

Your early attention to this matter will be greatly appreciated. 
Sincerely, 

SwAGAR Sherley. 



4 ABANDONMENT OF GOVEENMENT APPLICATIONS FOB PATENTS. 

I requested from the Commissioner of Patents an answer to one or 
two questions with regard to the effect of this bill, and if the com- 
mittee is agreeable I would be glad to take this matter up and give 
it a few minutes' attention now and ask the commissioner if he will 
kindly give us his opinion on this matter as to its effect. 

STATEMENT OF HON. THOMAS EWING, COMMISSIONER OF 

PATENTS. 

Commissioner EwiiNG. Mr. Chairman and gentlemen of the com- 
mitte, under the present statute, in order to prevent applications of 
private parties or applications owned by the Government from re- 
maining in the office for an indefinite period before they are patented, 
the law requires that whenever the office takes any official action the 
apphcant shall reply to that action within one year. The purpose 
01 this act is to relieve the Government of that requirement where 
the invention is important to armament or defense. Every three 
years the matter would have to be brought up so that the question 
could be raised by the commissioner as to whether it is proper to 
take the patent out or whether it is to be abandoned. 

The Government would have no right under this act to supple- 
ment the disclosure of the application in any way. The rules against 
the introduction of new matter into an application, whether in the 
drawings or in the specifications, are very strict and are strictly en- 
forced. The pubhc has suffered a good deal from the evil of delayed 
applications because applicants have modified their claims so as to 
take in things that were not in existence when they filed their appli- 
cation — to take them in in the sense that they were brought within 
the terms of the claim. 

To give you an illustration of a case which was tried out in the cir- 
cuit Court of Appeals for the second circuit, an inventor of a system 
known as the ^'Telesene system," used in hotels to call up the office 
and order anything that the guest washed to order from his room, 
where he was given a wide choice of articles, had an application on 
that system, and he drew a claim ultimately in the course of something 
over is yeai-s' prosecution, w^hich embraced within its terms the cen- 
tral battery system in telephone communication, although the central 
battery system was not in existence when he filed his application on 
the Telesene and was not within his contemplation when he filed that 
application. 

It is, abuses of that sort which make it important that applications 
should not be delayed in the Patent Office. The Govermnent would 
not be tempted to be guilty of that sort of abuse, for the reason that 
the Government would not conceivably sue on any patent that it took 
out and its claim could be of Jio special consequence. The disclosure 
could not be changed, but the disclosure would be there to protect 
the Government against a subsequent invejitor, whether an inde- 
pendent niventor or a copyist, who filed an application and undertook 
to obtain a patent. If he did so he would find in the ofiice the appli- 
cation owned by the Government, with its date of filing and its dis- 
closure -aU matters of record — and that apj^lication kept alive in 
spite of the general provision that an applicant must act within one 
year iiiulci- the provisions of this act. 



ABANDONMENT OF GOVERNMENT APPLICATIONS FOR PATENTS. 5 

If the Government undertakes to enforce sucli an application 
against a subsecpient inventor it would only.be done by intc^rfc^-ence 
proceedings, an(i they would involve the disclosure of the ap})lication 
to the rival inventor, whose riglits could then be determined in the 
light of the entire knowledge wliich the oihce had. But meanwhile, 
if any application is filed, the Government has the benefit of that 
application and of the secrecy of the ofhce respecting it, and in case 
an interf{^rence does arise the Government has the option of disclosing 
the ap])lication and fighting the interference, or of keeping the appli- 
cation a secret to itself, or buying the party out. 

That is the purpose of that act, and wliile I have nothing to say 
myself as to the policy tliat it involves of keeping these things secret, 
I think that if they are to be kept secret this is the only way in 
which it can be done. 

Mr. Smith. You see no objection to the bill 

Commissioner Ewing. No; except I think it ought to be definitely 
understood that this thing will not be done lightly by the Govern- 
ment, that it will be done only because there is a serious reason why 
the application should be kept secret. We do not want a lot of 
secret things in the office, kept there for years. I am trying to get 
them all out. 

Mr. Smith. You do not think the Government would do that, do 
you ? 

Commissioner Ewing. There is so strong a tendency to let things 
alone that anybody is stirring up that I am afraid it might happen 
in that way, and that is why I put in that express provision. It 
gives the commissioner a chance to raise the question, and I think 
that is sufficient for public protection. 

Mr. Oglesby. This provision at the end of the statute says: 

Provided, h.oirerer. That no application shall he rrgard<"d as ahancloned which has 
bocomo thf^ prop' rty of th^ (lOVfTmn'^ntof th'^ United States and with r sp' ct to which 
tho had of any d ^partm^Mit of tho Gov^rnmont shall have certified to tho «' ommis- 
Hio\v r of Pat'MJts, within a p riod of three years, that tho invention disclo&d therein 
is important to the arinam nt or defense of the United States. 

That may have a somewhat accentuated significance at the present 
time on accoujit of the more or less excited state of the public mind 
over the situation. The committee would be glad to get suggestions 
from the gentlemen present who are conversant with that situation. 

STATEMENT OF MR. FRITZ VON BRIESEN, ATTORNEY AT 
LAW, 25 BROAD STREET, NEW YORK CITY. 

Mr. VON Briesen. Mr. Chairman, I attended the meeting this 
morning in the interest of another bill, and the existence of this bill, 
H. R. 13720, is a new thing to me. It so happened, however, that I 
am one of the patent counsel of the Winchester Repeating Arms Co., 
of .New Haven, and it occurs to me that one or two matters should 
be considered by this committee which may have a bearing on tho 
private manufacturing of arms and ammunition bv private com- 
panies. 

The Commissioner, who has just spoken, has stated that the United 
States Government would never bring suit on any letters patent that 
it acquired. That is news to me, that the Government should look 
upon patents which it may acquire as something otlier tlian a source 



6 ABANDONMENT OF GOVERNMENT APPLICATIONS FOR PATENTS. 

of monopoly. It seems to me that unless some definite provision is 
made the United Statei^ Government may very soon bring a suit 
against a private manufacturer for violating a patent. There is 
nothing to prevent it from doing so. 

Then, under the provisions of this bill an application may be held 
in the Patent Office for 12 or 15 years and may then issue as a patent 
running for 17 years, and it is quite possible that a manufacturer like 
the Union Metallic Cartridge Co., of Bridgeport, or the Winchester 
Repeating Arms Co., of New Haven, may have invested two or three 
hundred thousand dollars in a plant to turn out this very invention, 
of the application covering which it knows nothing. 

Now, it is a fact that a great many inventions are made by these 
very companies, patents for which are never applied for, so that no 
interference would be declared, and these manufacturers would have 
no means of knowing that the Government has a patent apphcation 
pending there, and may keep it pending for a dozen, 15 or 20 years. 

I am merely laying the facts before the committee in order that in 
using its judgment it may have the facts before it. I am quite sure 
that the Winchester Repeating Arms Co. will do all that it can to co- 
operate with the Government in keeping matters of this kind secret. 
I know they will make no objection to the bill, but I am sure they will 
be very glad to have had your attention called to the fact that injus- 
tice might result in case the Government should sometime feel like 
enforcing its patent rights. 

Mr. Oglesby. I understand the commissioner's position is that 
since the Government has never sued — would not sue on these pat- 
ents to restrain anybody else from manufacturing an article if they 
should themselves make a similar invention or from the original 
inventor get information which he ought not to disclose but which he 
might disclose; but that the Government, having filed this applica- 
tion, would be in a position to prevent any private manufacture: 
from himself getting a monopoly in the manufacture of that article, i- 

Mr. Von Briesen. That is very true, and I am sure we are alF 
heartily in sympathy with that proposition. It is simply news to 
me that the Government would never sue on its patents. I doubt 
very much whether the Government has ever expressed the idea, 
either through its judicial department or its executive department 

Commissioner Ewing. I was not stating that as a matter of news; 
I was simply stating it as a matter of opinion. I had no knowledge. 

Mr. VoN Briesen. You understand, Mr. Chairman, it may take 
an investment of half a million dollars some tirues to produce an in- 
vention, and some of these manufacturers might enter upon the 
manufacture of an article of that kind and then find that there is a 
patent application pending in behalf of the Government. 

Mr. Oglesby. You do not think any of the people you represent 
would spend half a million dollars in preparing to manufacture any 
kind of an article without first filing an application for a patent ? The 
filing of that application would disclose the fact that the Govern- 
ment liad an application pending covering the identical principle. 

Mr. Von Briesen. I should hardly think so, but my experience 
has been that a great many of these inventions are worked as secret 
inventions without any patent being applied for in the Patent Office 
at aU. Then again, tliey may not believe the invention to be patent- 
able. We liave had an instance of that very recently in an inter- 



ABANDONMENT OF GOVERNMENT APPLICATIONS FOR PATENTS. 7 

ference between the Union Matallic Cartridge Co. and the Winches- 
ter Repeating Arms Co., where one worked the invention and thought 
it was not patentable and the other man got a patent on it. 

I am simply suggesting that if the committee is goin^ to decide in 
favor of this bill it ought to indicate in some way that it is the opinion 
of the committee that the United States Government will never bring 
suit against an innocent infringer. 

Mr. Oglesby. I do not think we ought to put the Government in 
the position of estopping itself if it chose to bring suit. I do not think 
it would. Tlie Government does not want a monopoly, but only to 
prevent others from getting a monopoly in some things which it 
might desire to use. 

Mr. Charles. Will this bill be a protection to the Government in 
keeping their secrets of inventions for defense and so on ? 

Commissionei* Ewing. That is what it is intended to be. I think 
the Patent Office can be trusted. There was a suggestion made that 
we should send those papers to the War Department, but I pointed 
out that that meant two departments would know all about the thing, 
and one department was enough. 

Mr. Oglesby. If two departments knew about it you could never 
center responsibihty for disclosure upon either one of them ? 

Commissioner Ewing. No, sir. Of course, there are certain people 
in the War Department that would have to know in any event, but 
the papers might just as well remain in the Patent Office, and we are 
practiced in keeping secrets. 

Mr. Charles. I think the Government is much too liberal about 
its secrets of defense and everything pertaining to defense, 
j Commissioner Ewing. I do not think there is any serious danger to 
viuy private interest in this matter. I have been asked to let up on 
these applications where the Government owned them and not 
i-^uire that they be acted on with the promptitude that I am insisting 
jpon in the case of private interests ; but I have insisted that that is 
10 1 very workable. While there may be reasons for letting the 
Government do things that private interests are not allowed to do, it 
creates a bad impression throughout the office, and there is some 
uncertainty as to why it is done, and so on. 

Mr. Charles. Might I ask you what the pohcy of England, Ger- 
many, France, and Italy is in regard to this same proposition ? 

Commissioner Ewing. In some of the countries they have secret 
patents and they keep these things a secret absolutely. But with us 
I think the idea of a secret patent is unthinkable. To my mind, 
under our system of law, it does not mean anything. We could 
neither enforce it against anybody nor use it as evidence. 

Mr. Bradford. Would it not be a comparatively simple matter to 
add a proviso that would safeguard the rights of private interests 
that might mtervene innocently after a certain period of time ? 

Commissioner Ewing. Of course, we do not want to take away 
from the patent any force that it has. The Government acquires it, 
but as a matter of practical fact I do not beheve that any private 
interest will run any risk. 

:Mr. Oglesby. Do you not think that if any of these concerns manu- 
facturing ammunition or armament have anything that is new or 
valuable they will certainly apply for a patent on it themselves ? 



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ABANDONMENT OF GOVERNMENT APPLICA 




,„„„.„ iiniiiiri!ii!iiiiiiiiii.i;^iii 

Commissioner Ewing. Yes, sir; I am almost o q 019 935 006 7 
this much can be stated, that they are certainly takmo^ this risk now 
with respect to rival private concerns. It has been a large abuse in 
the past. This is to remove that abuse. 

Now, havino; lived along all these years under the threats of injury 
-and actual injury coming from private interests, I fail to see why we 
should be very much afraid of the threat of actual injury coming 
from the Government. 

Mr. Oglesby. Are there any other attorneys here tliat would care 
to make any suggestions ? 

Mr. Dodge. I would like to ask Commissioner Ewing if I correctly 
understood him that the Government might, when it owned an appli- 
cation of that sort, omit to declare an interference or to prosecute an 
interference and subsequently take out the patent ? 

Commissioner Ewing. No; I did not mean that. * I do not think 
that would be possible. I think the Government would either have 
to show its hand when a rival application is filed or lie down. 

Mr. Dodge. If that is the effect of the bill, I do not see any objec- 
tion to it, but if that is not guarded against I should consider it a 
very serious thing; because, as Mr. Von Briesen has suggested, 
large sums might be invested in the development of some particular 
manufacture, and if you file an application for a patent here, and the 
Government, without your knowledge of its application, should not 
declare an interference and let that patent go out, it might subse- 
quently take its own patent and sue these people. 

It is true, so far as I know, that no suit has ever been brought by 
the United States Government under a patent. Of course, there has 
to be a first tima for everything, and I can readily foresee the possi- 
bility of a suit of that sort if the Government were of the opinion 
or if officials, anxious to show how active they were in protecting 
the public, should assume that the prices which private manufac- 
turers were charging were unduly large, should bring this suit to 
force them down to lower prices or make it themselves and justify it 
under that patent. It seems to me that ought to be guarded against 
in some way. 

Commissioner Ewing. Mr. Dodge, there is not a word in this bill 
about interferences. The law €)f interferences is not changed in any 
way. The sole effect is to keep alive an application which would be 
abandoned if it failed to be used within one year. How could a 
change in that provision, the mere statement that the case will not be 
held abandoned if it is owned by the Government — how can that alter 
the right of rival parties? 

Mr. Dodge. I do not think it can. 

Commissioner Ew^ing. I do not think it can; I do not think the 
question is raised. 

Mr. Dodge. But I got that impression 

Commissioner Ewing. I merely mean that if a rival files an appli- 
cati(m the Government has either got to show its hand or lay down. 
1 presume the Government might have the privilege of abandoning 
its a))plication and keeping it secret. 

Mr. Dodge. In that event I do not see any objection to it. 
Mr. Oglesby. We will take tiiis bill up, then, in pxecutive session. 
(Tno committee thereupon proceeded to the consideration of other 
business.) 



LSBRARY OF CONGRESS 



019 935 006 7 



